WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Construction Rentals, Inc. v. BWI Domains, Domain Manager
Case No. D2008-0915
1. The Parties
The Complainant is National Construction Rentals, Inc., of Mission Hills, California, United States of America, represented by Stone Rosenblatt & Cha, United States of America.
The Respondent is BWI Domains, Domain Manager, WestBay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2008. On June 17, 2008, the Center transmitted by email to R Services Corp a request for registrar verification in connection with the domain name at issue. On June 18, 2008, R Services Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 16, 2008.
The Center appointed Fleur Hinton as the sole panelist in this matter on July 22, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant has used the trade mark NATIONAL RENT-A-FENCE since 1979 in relation to the rental of fencing and auxiliary equipment. Of the 3 US trademark registrations, 2 registrations date from 1979 with a first use in commerce from 1980 and the later registration showing the trademark in a different format, from 1998. The Panel notes, however, that of those 3 registrations, registration 2,179,805 with a first use in commerce dating from 1980 is owned by National Business Group Inc and not by the current Complainant. The Complainant has not provided an explanation of this discrepancy. However, one of the other 2 registrations owned by the Complainant also has a first use in commerce of 1980.
The Respondent acquired the domain name (the “Domain Name”) by auction from Network Solutions in approximately October, 2007 and transferred it to R Services Corp on or about March 27, 2008. Under the terms of the R Services Corp's registration agreement the Respondent is subject to the Policy.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its 3 US trademark registrations for NATIONAL RENT-A-FENCE. The Complainant states that the registered trademarks are known throughout the United States of America (“United States”) due to extensive and ongoing advertising and promotional activity. It further states that the Complainant itself is known throughout the United States as the largest provider of temporary fencing and related construction equipment.
The Complainant also contends that the Respondent has no rights or legitimate interest in respect of the Domain Name and, further, that the Domain Name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Complainant to succeed in having the Domain Name transferred to it, it must establish to the Panel's satisfaction that the Domain Name is identical or confusingly similar to the Complainant's trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that there is evidence that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is substantially identical (lacking only 2 hyphens for complete identity) and confusingly similar to the Complainant's trademarks. The Panel notes that the Complainant has not provided any evidence of the Complainant's reputation in the trademark but, on the basis of previous panel decisions, finds that such evidence is not necessary where a complainant has a registered trademark pre-dating the disputed domain name.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has not responded to the allegations by providing evidence that it does have rights or legitimate interests in the Domain Name.
In Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 the panel considered what the complainant had to establish in a case such as this, where the respondent has not lodged a response, where the respondent is in a position easily to provide proof of such rights or legitimate interests as it may have, and where the requirement of the Policy appears to be that the complainant prove a negative. The panel found that the complainant does have the onus of proof upon it. However, where the respondent has not lodged a response, it is necessary for the complainant to establish only a prima facie case in order for the onus to shift to the respondent.
This issue was also considered by the panel in Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA,WIPO Case No. D2000-1376. In that case the domain name was and the complainant, the Swiss bank, Credit Suisse. The complainant had not lodged evidence in respect of the respondent's rights or legitimate interests but relied on its international reputation in the trademark CREDIT SUISSE, the fact that it had not authorized the use of by the respondent and the fact that the respondent had no connection with Switzerland. The panel found that that was sufficient to establish a prima facie case under paragraph 4(b) of the Policy.
The Complainant in this case has alleged that the Domain Name is not the trade name or company name of the Respondent, that the Respondent is not making a bona fide offering at the website and that the Respondent is using the Domain Name for commercial gain. The Complainant does not enjoy the international reputation enjoyed by Credit Suisse. However, in the Credit Suisse case, the panel referred also to the case of INTOCAST AG v. LEE DAEYOON,WIPO Case No. D2000-1467.
In that case the panel discussed the differences between the requisite burden of proof for paragraphs 4(b) and 4(c) of the Policy respectively. In the latter case the burden of proof falls on the respondent. That is not the case with 4(b) of the Policy. Under paragraph 4(c) of the Policy in the absence of a response, the panel is required to decide the issue on the basis of the documents submitted in the case so that it is not sufficient to attribute a lack of rights or legitimate interests to the Respondent simply because no response has been lodged. However, in the INTOCAST case, the panel went on to say that an adverse inference can be taken from a respondent's failure to file evidence in a situation where that evidence is within its control. In such a case allegations may, in an appropriate case, be sufficient to establish a prima facie case. See also, WIPO Overview of WIPO Panel Views on selected UDRP Questions, Question 2.1.
In the present case it seems clear from the nature of the Respondent's website and the length of time that the trademark NATIONAL RENT-A-FENCE has been in use that the Respondent must be aware of the Complainant and its trademark. The corollary is, therefore, that the Respondent itself has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Complainant alleges that the Respondent has deliberately registered the Domain Name in order to disrupt the Complainant's business and to direct business away from the Complainant to the Respondent's website where the products of the Complainant's competitors are advertised and offered for sale. The Complainant also refers to 2 earlier UDRP WIPO cases this year in which other domain names registered by the Respondent were transferred to other complainants. Those cases are not directly relevant to the present case.
The Respondent has done nothing to refute the contentions made by Complainant or to explain how it comes about that it is using for a domain name a trademark which is identical with that of the Complainant to promote the same sorts of products and services which the Complainant offers. In the absence of any explanation, the Panel finds that the Domain Name was registered and is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Fleur Hinton
Sole Panelist
Dated: August 5, 2008
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